The UK Supreme Court delivered judgment in the case of Iconix Luxembourg Holdings SARL (Respondent) v Dream Pairs Europe Inc and another (Appellants) – UK Supreme Court.

The appeal concerned a trade mark dispute about logos on football boots. The case raised two key considerations of trade mark law: (i) the importance of assessing similarity between a sign and mark and (ii) the relevance of potential confusion between the sign and the mark post-sale. The UK Supreme Court also addressed the entitlement of the Court of Appeal to re-determine the decision of the High Court in particular circumstances.

Background:

 Iconix the respondent is the owner of the sports brand UMBRO and is the registered proprietor of UMBRO’s “double diamond” trade marks. The UMBRO trade marks (the “Marks”) have been used on sportswear and in particular football boots since 1987:

Dream Paris the appellant has sold footwear branded with the “DP Logo since December 2018 in the UK:

For infringement to occur under section 10 (2) of the UK Trade Marks Act 1994, which is similar to the Irish Trade Mark Act 1996, infringement requires the sign must be identical or similar to the trade mark and is used in relation to goods similar to those for which the trade mark is registered. Section 10 (3) requires the trade mark to have reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark.

Iconix brought the present action against Dream Paris for infringement of its UMBRO marks by use of the DP logo in relation to footwear.

In March 2023, the High Court dismissed Iconix’s claim under section 10 (2) and 10 (3) of the 1994 Act. The High Court found that there was a very low degree of similarity between the UMBRO trade marks and the DP logo, and there was no likelihood of confusion between the two marks for the average customer.

Iconix appealed and in January 2024, the Court of Appeal overturned the decision of the High Court and held that there had been trade mark infringement. The Court of Appeal concluded that the Judge’s conclusion was irrational when one considered the sign affixed to the footwear when viewed from any angle other than directly straight-on and the Judge had erred in the assessment of post-sale confusion.

Dream Paris appealed that decision to the Supreme Court.

The Supreme Court Decision

The judgment addressed three key issues in reaching a decision:-  

The Similarity issue

Dream Paris submitted that, when assessing whether the DP logo and the UMBRO marks were similar, extraneous circumstances such as how the goods are subsequently perceived or marketed should not be taken into account. In the High Court the assessment of similarity was only conducted from one viewpoint. Dream Paris argued that such a similarity assessment cannot be justified unless that is the only viewpoint or angle in which the average consumer would ever encounter the DP logo.

This was rejected by the Supreme Court. It held that realistic and representative post-sale circumstances can be taken into account for the purpose of establishing whether the marks are similar. Even if there is a faint similarity between marks, the Court must undertake a global assessment of the likelihood of confusion on part of the relevant consumer.  The Supreme Court pointed out that the High Court had previously done this. Upon finding only a faint similarity on a side-by-side analysis, the High Court turned to a global assessment in which realistic and representative viewing angles were considered.

The Confusion issue

Dream Paris identified as the key consideration on this appeal the following question:

“When assessing whether there is a likelihood of confusion under section 10(2) of the Act, can that include a risk of confusion arising outside the transactional context and/or by someone other than the potential purchaser?”

Dream Paris sought to establish as a matter of law that any post- sale confusion between the DP logo and UMBRO marks should not amount to actionable infringement under section 10 (2) unless it involves confusion that affects the essential function of a trade mark as a guarantee of origin at the point of sale. This was rejected by the Supreme Court. The Court identified that a number of CJEU authorities have made clear that a trade mark continues to identify origin even after sale and infringement can arise on the basis of a likelihood of post-sale confusion.

Was the Court of Appeal entitled to re-determine the decision of the High Court

While views regarding the similarity of the DP logo and UMBRO marks when viewed at an angle might differ, the Supreme Court stated that the High Court’s assessment was not irrational. The Court felt that this was a case in which there were no matters such as error of principle or law which entitled the Court of Appeal to adopt a different view of the answer to the multifactorial question facing the Judge from that which he had reached. As such, the Court of Appeal had not been entitled to re-determine the decision of the High Court.

Conclusion

While the Supreme Court rejected the main points of law raised by Dream Paris, it ultimately allowed the appeal.

The case affirms the potential for post-sale confusion to be considered in trade mark infringement cases and confirms that the function of a trade mark as an indicator of origin does not stop at the point of sale. Brand owners should be aware that a low degree of similarity in a side-by-side comparison does not necessarily eliminate or reduce the risk of infringement. The likelihood of confusion may still be high depending on how the branded product is used and marketed.

The case also reinforces the principle that appellant courts should only intervene when a first instance decision is clearly wrong.